Laticrete International Inc. v Seal Hard Australia Pty. Ltd

This matter concerned an application by Laticrete International Inc. (the Applicant) to remove the trade mark "SEAL HARD" from the Register under section 92(4)(b) of the *Trade Marks Act 1995* (Cth) for non-use. Seal Hard Australia Pty. Ltd (the Opponent) opposed this application. The Applicant alleged that the trade mark had remained registered for a continuous period of three years without use in Australia. The Opponent contended that it had continuously used the trade mark in good faith in relation to the registered goods since 1 May 2008, and specifically during the relevant period of 24 May 2014 to 23 May 2017.

The primary legal issue before the Hearing Officer was whether the Applicant had established the grounds for removal of the trade mark due to non-use. This required determining if the Opponent had used the trade mark in Australia in good faith during the three-year period preceding the filing of the removal application. The Applicant’s evidence suggested that the Opponent had been a distributor for L&M Construction Chemicals Inc., from whom the Applicant claimed to have acquired intellectual property rights in the "Seal Hard" mark.

The Hearing Officer considered evidence from both parties. The Opponent provided a declaration from its Managing Director, supported by various documents including Wayback machine archives of its website, invoices to Australian clients, a company vehicle displaying the mark, business cards, and screenshots showing the mark on product packaging and a commercial building. The Applicant’s evidence included a declaration from its Senior Vice President, asserting its global leadership and its acquisition of rights from L&M. However, the Opponent submitted that the Applicant's assertions were irrelevant to the question of the Opponent's use of the trade mark during the non-use period.

Ultimately, the Hearing Officer was satisfied that the Opponent had presented sufficient evidence to rebut the Applicant's allegations of non-use. The evidence demonstrated repeated and consistent use of the trade mark by the Opponent in relation to the registered goods throughout the relevant period. Consequently, the Hearing Officer determined that the grounds for removal had not been established, and the trade mark would remain on the Register. The Opponent was awarded costs against the Applicant.